- BASICS: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(2/b). S. Ct. has rejected the Fed. Cir.’s “amenable to construction” and “insolubly ambiguous” test (which Fed. Cir. had adopted in 2001) as not even “probative of the essential inquiry,” mandating instead a “reasonable certainty” and “clear notice” standard: “We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the ‘insolubly ambiguous’ standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus (U.S. 06/02/2014) (9-0) (Klarquist’s S. Ct. argument 04/28/2014), on remand, Nautilus III (Fed. Cir. 04/27/15) (again rev’g Summ. J. of indefiniteness); see Dow Chem. II (Fed. Cir. 08/28/15) (“there can be no serious question that Nautilus changed the law of indefiniteness. This was indeed the very purpose of the Nautilus ”) “To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’” Id. Presumption of validity does not alter degree of clarity required by the statute. Id. See White (U.S. 11/15/1886) (“The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is ….”); Mahn v. Harwood, 112 U.S. 354, 361 (1884) (“[t]he public is notified and informed, by the most solemn act on the part of the patentee, that his claim to invention is for such and such an element or combination, and for nothing more”). Not part of Sec. 120.
- Question Of Law: “Indefiniteness is a question of law that we review de novo.” Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (holding claims indefinite post remand from S. Ct.); EPlus (Fed. Cir. 11/21/12) (“indefiniteness is a question of law and in effect part of claim construction.”); see Nautilus (U.S. 06/02/2014) (expressly not deciding “whether factual findings subsidiary to the ultimate issue of definiteness trigger the clear-and-convincing evidence standard and, relatedly, whether deference is due to the PTO’s resolution of disputed issues of fact.”)
- Clarity Of Claims Is Essential To Promote The Useful Arts Through Design Around: “Clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in ‘full, clear, concise, and exact terms,’ 35 U.S.C. § 112, as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor’s exclusive rights. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989).” Festo (U.S. 05/28/2002) (unanimous). See Gen. Elec. (U.S. 05/16/1938) (“The limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public. The statute seeks to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their rights. The inventor must ‘inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.’”); Cuozzo (U.S. 06/20/2016) (rejecting claims under “broadest reasonable construction” standard “helps ensure precision while avoiding overly broad claims, and thereby helps prevent a patent from tying up too much knowledge, while helping members of the public draw useful information from the disclosed invention and better understand the lawful limits of the claim.”); HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g indefiniteness; patent owner ignores “one of the cornerstones of the definiteness requirement: to afford clear notice of what is being claimed so as to apprise the public of what is still open to them. The Supreme Court has repeatedly emphasized why the definiteness requirement demands clear notice of what is being claimed.”); In re Maatita (Fed. Cir. 08/20/18) (rev’g indefiniteness of design patent claim; “the purpose of § 112’s definiteness requirement, then, is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed—and therefore what would infringe.”); Slimfold (Fed. Cir. 05/15/91) (Rich, J.) (“Designing around patents is, in fact, one of the ways in which the patent system works to the advantage of the public in promoting progress in the useful arts, its constitutional purpose. Inherent in our claim-based patent system is also the principle that the protected invention is what the claims say it is, and thus that infringement can be avoided by avoiding the language of the claims.”) Cf. Aqua Prods. (Fed. Cir. 10/04/17) (en banc) (O’Malley, J., joined by four other Judges in opinion) (“the ‘worst’ possible outcome [of an IPR adding amended claim] is that a patent issues in which the previously-examined claims have been narrowed and clarified in such a way that the petitioner does not fear its ability to continue to make, use, or sell its own product, and the public is put on notice of exactly how to innovate around those claims in the future.”)
- “Clarity and Precision,” “Reasonable Certainty” And “Clear Notice” Required, But Not “Absolute Precision”: “Cognizant of the competing concerns, we read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that ‘the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.’ Minerals Separation, Ltd. Hyde, 242 U.S. 261, 270 (1916). See also United Carbon, 317 U.S. at 236 (‘claims must be reasonably clear-cut’); Markman, 517 U.S., at 389 (claim construction calls for ‘the necessarily sophisticated analysis of the whole document,’ and may turn on evaluations of expert testimony).” Nautilus (U.S. 06/02/2014) (referring to “the statute’s clarity and precision demand”). Permits “some modicum of uncertainty.” Id. “A patent must be precise enough to afford clear notice of what is claimed, thereby “‘appris[ing] the public of what is still open to them,’” in a manner that avoids “[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.” Id. (citations omitted); see Liberty Ammunition (Fed. Cir. 08/26/16) (Spec. saves term of degree from indefiniteness: “Terms of degree are problematic if their baseline is unclear to those of ordinary skill in the art. We especially take caution when presented with terms of degree following the Supreme Court’s decision in Nautilus.”); Dow Chem. II (Fed. Cir. 08/28/15) (“Nautilus emphasizes ‘the definiteness requirement’s public-notice function.’”); Eon (Fed. Cir. 05/06/15) (Nautilus “warned against ‘diminish[ing] the definiteness requirement’s public-notice function and foster[ing] the innovation-discouraging zone of uncertainty against which this Court has warned.’”); cf. Akamai Tech. III (Fed. Cir. 05/13/15) (2-1) (“the patentee specifically defines the boundaries of his or her exclusive rights in the claims appended to the patent and provides notice thereby to the public so that it can avoid infringement.”), vacated Akamai Tech. IV (Fed. Cir. 08/13/15) (en banc). But see Berkheimer (Fed. Cir. 02/08/18) (aff’g determination of “indefiniteness” of “minimal redundancy,” but framing the issue as whether the claims are “reasonably clear”); HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g indefiniteness; “that the basic and novel properties may not be precise does not automatically render them indefinite. Instead, the basic and novel properties must be sufficiently definite so as to inform, with reasonable certainty, a POSITA of their scope within the context of the invention”).
- Nautilus Rejects Claim-Construction-First, Post Hoc Approach: Measured from viewpoint of person of skill in the art at the time the patent was filed: “It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Nautilus (U.S. 06/02/2014); but see Nautilus III (Fed. Cir. 04/27/15) (on remand) (engaging in claim construction based in part on reexamination and not addressing conflicting clues in original intrinsic evidence). This rejects Fed. Cir.’s hindsight, crystal-ball approach of first construing the claim and then asking if claim so-construed provided sufficient notice. But this distinction between claim construction and “indefiniteness” was not mentioned in Teva Pharm. II (U.S. 01/20/2015) (7-2) (overturning Fed. Cir.’s long-standing purely “de novo” review of claim constructions; in context of argument that claim language “molecular weight of 5 to 9 kilodaltons,” is indefinite.); on remand Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (basing indefiniteness holding in part on later prosecutions of two continuations in which Examiners said claim term indefinite, and applicant responded by defining the term in two different ways in the two prosecutions; rejecting argument that post-issuance prosecution cannot invalidate a patent: “A statement made during prosecution of related patents may be properly considered in construing a term common to those patents, regardless of whether the statement pre- or post-dates the issuance of the particular patent at issue.”)
- Accepted Claim Construction May Be Indefinite For Imprecision: That a patent owner “can articulate a definition supported by the Spec. … does not end the inquiry. Even if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Haliburton Energy (Fed. Cir. 01/25/08) (aff’g Summ. J. of indefiniteness of “fragile gel.”); Bombardier (Fed. Cir. 09/20/19) (non-precedential) (aff’g jury verdict of indefiniteness where both parties accepted district court’s claim construction and indefiniteness was based on terms used in that claim construction); GE Lighting (Fed. Cir. 10/27/16) (non-precedential) (aff’g term “elongated” (in “a thermally conductive elongated core having a first end in thermal communication with the conductive spreader”), construed to mean “extending in length,” indefinite; no “objective boundaries” for this term of degree; where applicant in prosecution distinguished some prior art as not “elongated,” and provides no dimensions in the Spec.).
- Disconnect With Disclosure Or Internal Inconsistency In Claim May Support Indefiniteness: “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.” MPEP 2173.03 (R-08.2017); In re Cohn (CCPA 03/18/71) (reading some claim language consistently with the Spec. causes other claim language to be inconsistent with and therefore each claim is internally inconsistent and therefore indefinite); Purechoice (Fed. Cir. 06/02/09) (non-precedential) (claim terms not used or explained in Spec. and appear inconsistent with embodiments in Spec.); Competitive Tech. (Fed. Cir. 06/15/06) (non-precedential) (“Because the ‘address means’ limitation of claim 5 requires ISA structures, and the ‘sustain means’ limitation of that same claim excludes ISA structures, a person of ordinary skill in the art would be unable to determine the scope of the claims. They are internally inconsistent. We therefore conclude that the court did not err in holding that claims 5-11 are invalid because of indefiniteness.”)
- Lack Of Antecedent Basis Not Necessarily Invalidating: Energizer Holdings (Fed. Cir. 01/25/06) (claim not indefinite just because claim term lacks antecedent basis).
- “Standard” Goods Or Services Not Necessarily Invalidating; Measured In Context Of Specific Embodiment Of Claimed Invention: Claim construed to require “standard” goods and services not invalid for indefiniteness: “Of course a person wishing to practice the invention will not know the exact terms of the ‘good or service’ until the specific market or network is chosen. Upon that choice, however, the ‘good or service’ comes into clear focus.” Source Search (Fed. Cir. 12/07/09).
- Won’t Change Construction To Avoid Indefiniteness: “we do not redraft claims to contradict their plain language in order to avoid a nonsensical result.” Haemonetics (Fed. Cir. 06/02/10); Source Vagabond (Fed. Cir. 06/05/14) (aff’g R. 11 sanctions ivo patent owner’s frivolous claim construction position, even if correct construction renders claim nonsensical.)
- Patent Owner Proposing An Arbitrary Or Indefinite Construction Supports Finding Of Indefiniteness: HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness of one term because patent owner’s proposed construction of that term referred to a second term separately held indefinite); Capital Sec. (Fed. Cir. 03/07/18) (non-precedential) (finding “no rationale supporting the seemingly arbitrary definition” proposed by the patent owner at appellate argument, and relying on that in support of aff’g indefiniteness).
- Definiteness Requirement Extends To Subject Matter Incorporated Into Claim Via “Consisting Essentially Of” Transition: “Having used the phrase ‘consisting essentially of,’ and thereby incorporated unlisted ingredients or steps that do not materially affect the basic and novel properties of the invention, a drafter cannot later escape the definiteness requirement by arguing that the basic and novel properties of the invention are in the specification, not the claims…. A patentee can reap the benefit of claiming unnamed ingredients and steps by employing the phrase ‘consisting essentially of’ so long as the basic and novel properties of the invention are definite.” HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness of “consisting essentially of” claim because the basic and novel property of “better drying time” was indefinite).
- Level Of Skill In The Art Relevant: “the level of ordinary skill in the art plays an important role in an indefiniteness analysis.” Tinnus Enter. (Fed. Cir. 01/24/17) (aff’g preliminary injunction; claim reciting filling balloon until “substantially filled” with water; “plain error” review of indefiniteness because challenger did not object to Magistrate Judge’s recommendation of no indefiniteness; “We find it difficult to believe that a person with an associate’s degree in a science or engineering discipline who had read the specification and relevant prosecution history would be unable to determine with reasonable certainty when a water balloon is “substantially filled.”)
- Alleged Infringer’s Use Of Same Terminology May Evidence Not “Indefinite”: “Evidence of a challenger’s own ability to apply a term without unreasonable uncertainty counts against an indefiniteness contention.” Liqwd (Fed. Cir. 01/16/18) (non-precedential).
- Some Parallels With “Void For Vagueness” Due Process Principle: Although statutory particular-and-distinct claiming mandate may be stricter, the void-for-vagueness principle has some parallel considerations. “A fundamental principle in our legal system is that laws which regulate persons or entities must give fair notice of conduct that is forbidden or required. See Connally General Constr. Co., 269 U.S. 385, 391, 46 S. Ct. 126, 70 L. Ed. 322 (1926) (“[A] statute which either forbids or requires the doing of an act in terms so vague that men of common intelligence must necessarily guess at its meaning and differ as to its application, violates the first essential of due process of law“); Papachristou v. Jacksonville, 405 U.S. 156, 162, 92 S. Ct. 839, 31 L. Ed.2d 110 (1972) (“Living under a rule of law entails various suppositions, one of which is that `[all persons] are entitled to be informed as to what the State commands or forbids'” (quoting Lanzetta v. New Jersey, 306 U.S. 451, 453, 59 S. Ct. 618, 83 L.Ed. 888 (1939) (alteration in original))). This requirement of clarity in regulation is essential to the protections provided by the Due Process Clause of the Fifth Amendment. See United States v. Williams, 553 U.S. 285, 304, 128 S. Ct. 1830, 170 L. Ed.2d 650 (2008). It requires the invalidation of laws that are impermissibly vague. A conviction or punishment fails to comply with due process if the statute or regulation under which it is obtained “fails to provide a person of ordinary intelligence fair notice of what is prohibited, or is so standardless that it authorizes or encourages seriously discriminatory enforcement.” Ibid. As this Court has explained, a regulation is not vague because it may at times be difficult to prove an incriminating fact but rather because it is unclear as to what fact must be proved. See id., at 306, 128 S. Ct. 1830. Even when speech is not at issue, the void for vagueness doctrine addresses at least two connected but discrete due process concerns: first, that regulated parties should know what is required of them so they may act accordingly; second, precision and guidance are necessary so that those enforcing the law do not act in an arbitrary or discriminatory way. See Grayned v. City of Rockford, 408 U.S. 104, 108-109, 92 S. Ct. 2294, 33 L. Ed.2d 222 (1972). When speech is involved, rigorous adherence to those requirements is necessary to ensure that ambiguity does not chill protected speech.” FCC v. Fox (U.S. 06/21/2012). See also Sessions (U.S. 04/17/2018) (“The void-for-vagueness doctrine, as we have called it, guarantees that ordinary people have ‘fair notice’ of the conduct a statute proscribes.” “Our decisions ‘squarely contradict the theory that a vague provision is constitutional merely because there is some conduct that clearly falls within the provision’s grasp.’”); This doctrine also prohibits courts from rewriting the law, as that would violate separation of powers. Davis (U.S. 06/24/2019) (“In our constitutional order, a vague law is no law at all. Only the people’s elected representatives in Congress have the power to write new federal criminal laws. And when Congress exercises that power, it has to write statutes that give ordinary people fair warning about what the law demands of them. Vague laws transgress both of those constitutional requirements. They hand off the legislature’s responsibility for defining criminal behavior to unelected prosecutors and judges, and they leave people with no sure way to know what consequences will attach to their conduct. When Congress passes a vague law, the role of courts under our Constitution is not to fashion a new, clearer law to take its place, but to treat the law as a nullity and invite Congress to try again.”).
- Some Parallels To Statutory Construction: In interpreting Patent Act, S. Ct. has considered ability of market participants to determine how to avoid liability: “How are courts—or, for that matter, market participants attempting to avoid liability—to determine the relative importance of the components of an invention?” Life Tech. (Promega) (U.S. 02/22/2017) (7-0) (rejecting a proposed “qualitative” interpretation of “substantial portion of the components of a patented invention” in Sec. 271(f)(1).)
- Now-Overruled “Amenable to Construction” Or “Insolubly Ambiguous” Test: “If a claim is amenable to construction, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, the claim is not indefinite.” Aero (Fed. Cir. 10/02/06) (internal quotations omitted); IGT v. Bally Gaming (Fed. Cir. 10/06/11); Teva Pharm I (Fed. Cir. 07/26/13) (ambiguity insoluble because prosecution history statements in different patents in family self-contradictory), vacated on other grounds, Teva Pharm. II (U.S. 01/20/2015) (7-2). A construed claim may be indefinite. Nautilus (Fed. Cir. 04/26/13) (rev’g Summ. J. of invalidity), vacated on other grounds (U.S. 06/02/2014). Intrinsic evidence may describe experimentation necessary to determine claim scope. Nautilus (Fed. Cir. 04/26/13) (electrodes in “spaced relationship” sufficiently particular, in view of intrinsic evidence in reexamination describing testing to determine if an electrodes configuration achieves its claim-recited function), vacated (U.S. 06/02/2014).
a) post-Nautilus decisions
- Courts Have Found Claim Indefinite Under Nautilus After Finding Same Claim Definite Pre-Nautilus: Dow Chem. Co. v. Nova Chem. Corp. (Canada), 803 F.3d 620, 623 (Fed. Cir. 2015); Acqis LLC v. Alcatel-Lucent USA Inc., Civ. Ac. No. 6:13-CV-638, 2015 WL 1737853, at *9-10 (E.D. Tex. Apr. 13, 2015).
- Finding “Indefiniteness” Post Nautilus: HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness of three terms: (1) “impurity A” (because “the identity of ‘impurity A’” is not reasonably certain from the claims or Spec. and finding that extrinsic evidence does not make it reasonably certain is not clear error; (2) “the formulation degrades by less than 1% over 6 months” (because the patent owner’s proposed construction refers to the indefinite term “impurity A” such that the means to evaluate degradation is unclear); and “consisting essentially of” (due to uncertainty “about the scope of [one of] the basic and novel properties of the invention” due in part to disclosure of two different methods of evaluating that property, providing inconsistent results“)); Bombardier (Fed. Cir. 09/20/19) (non-precedential) (aff’g jury verdict of indefiniteness based on presumed jury finding that “a skilled artisan would not have been able to discern the dimensions of the standard rider [referenced in accepted construction of disputed claim term “seat position defined by the seat”] depicted in [the figures] due to errors in the figures.”); In re Downing (Fed. Cir. 12/07/18) (non-precedential) (aff’g PTAB rejection of ex parte appln. claims, applying Nautilus; claims purport to recite product-by-process claim but then recites functions of the product not steps for making the product, and thus “are indefinite for failing to clearly recite the steps for making the claimed product.”); Intellectual Ventures (T Mobile) (Fed. Cir. 09/04/18) (aff’g indefiniteness decision reached in claim construction; functional part of means-plus-function element (“optimiz[ing] . . . QoS [quality of service]”) “is a ‘term of degree’ that … is ‘purely subjective’ and depends ‘on the unpredictable vagaries of any one person’s opinion.’”); Capital Sec. (Fed. Cir. 03/07/18) (non-precedential) (aff’g Summ. J. of indefiniteness of “transactional operator,” after trial court had construed the term without prejudice to a Summ. J. motion on indefiniteness; indefinite “because ‘transactional operator’ has no commonly-accepted definition and its scope is unclear in view of the intrinsic evidence and [patent owner’s] proposed construction.”); Berkheimer (Fed. Cir. 02/08/18) (aff’g determination of “indefiniteness” of “minimal redundancy” in “wherein the archive exhibits minimal redundancy,” where Spec.’s only example has no redundancy but it suggests all redundancies may not be eliminated); Forest Labs. (Fed. Cir. 12/11/17) (non-precedential) (aff’g indefiniteness, claims require human-study comparisons of measured quantities (concentration profiles) for immediate release and extended release formulations, but “different techniques for such measurements are known in the art and some produce infringing results and others not, the intrinsic evidence does not adequately specify the technique or techniques to use, and extrinsic evidence does not show that a relevant skilled artisan would know what technique or techniques to us”); In re Walter (Fed. Cir. 08/21/17) (non-precedential) (aff’g PTAB rejection of amended claims in ex parte Reexam; term “block-like” support indefinite term of degree with no objective boundaries in intrinsic evidence); Trusted Knight (Fed. Cir. 03/07/17) (non-precedential) (aff’g indefiniteness of two claim phrases; italicized lang. in “a process of …, in response to the software key logging through the API stack to an internet communication” indefinite “because it is unclear what ‘in response to the software key logging’ requires,” and it “does not ‘appris[e] the public of what is still open to them.’”); Unwired Planet (Fed. Cir. 11/21/16) (non-precedential) (parties agreed claim indefinite if preamble (“an image having dimensions much larger than the dimension of the screen”) has patentable weight, which it does); GE Lighting (Fed. Cir. 10/27/16) (non-precedential) (aff’g term “elongated” (in “a thermally conductive elongated core having a first end in thermal communication with the conductive spreader”), construed to mean “extending in length,” indefinite; no “objective boundaries” for this term of degree; where applicant in prosecution distinguished some prior art as not “elongated,” and provides no dimensions in the Spec. [but reversing another indefiniteness ruling]); Icon Health (Fed. Cir. 08/08/16) (non-precedential) (aff’g judgment of indefiniteness of three claim terms (“in-band,” “out-of-band,” and “relationship”) based in part on expert citing multiple prior art references showing that “those skilled in the art understand that the terms ‘in-band’ and ‘out-of-band’ are relative terms, and only have meaning in a given context with a defined reference”); Dow Chem. II (Fed. Cir. 08/28/15) (on appeal of $30.9 Million supplemental damages award, holding claims indefinite under Nautilus—despite having held them definite on earlier appeal in same case (awarding $61.7 Million for earlier time period)—because intrinsic evidence provided no guidance as to which of four possible ways of measuring slope of a curve (with possibly different results) governs the claim’s slope limitation (“a slope of strain hardening coefficient greater than or equal to 1.3”), despite expert testimony that skilled artisan could determine a technique to use), en banc denied (Fed. Cir. 12/17/15) (concurring opinions of 7 Judges) (infringer has burden of proving indefiniteness with clear and convincing evidence and findings of fact are entitled to deference; and knowledge of someone skilled in the art may be pertinent to indefiniteness); Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (remand from S. Ct.) (again rev’g trial court and again holding claims invalid for “indefiniteness” based on claim term “molecular weight of about 5 to 9 kilodaltons,” despite accepting trial court fact findings, where “molecular weight” can be measured in three different ways to get different results, Spec. does not define which measurement applies); Interval (Fed. Cir. 09/10/14) (aff’g indefiniteness of display “in an unobtrusive manner that does not distract a user” as “highly subjective” and with only a “hazy relationship” with the written description; claims must provide “objective boundaries”); accord Dow Chem. II (Fed. Cir. 08/28/15) (quoting Interval with approval: “Thus, contrary to our earlier approach, under Nautilus, ‘[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.’”) See also Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (vacating finding of no indefiniteness where jury instructed under “insolubly ambiguous” standard: “While we have not clarified the relationship between ‘insolubly ambiguous’ and ‘reasonably certain,’ it must be admitted that the ‘insolubly ambiguous’ standard is a harder threshold to meet than the post-Nautilus standard.”)
- Rejecting “Indefiniteness” Post Nautilus: Guangdong (Fed. Cir. 08/27/19) (aff’g ITC finding that “lofty … batting” not indefinite where ITC adopted express definition in Spec. as its construction and also cited some numerical limitations in rejecting indefiniteness but refused to incorporate those limitations into construction); Indivior II (Fed. Cir. 07/12/19) (aff’g no indefiniteness of claim element: “cast film comprising a flowable water-soluble or water swellable film-forming matrix.” While it is physically impossible for a cast film in its final (dried) dosage form to be flowable, a product claim may recite elements in the state in which they exist during manufacture, before the final product exists, and the “only sensible reading of the claim is that the cast film is made from a matrix that is flowable before drying and is not simultaneously dry and flowable”); United Access (Fed. Cir. 01/24/19) (non-precedential) (rev’g trial court; 0.25 MHz is reasonable approximation of lower threshold of “high frequency” based on Spec., and term here need not have an upper limit beyond what is practically required, to be definite); Capital Sec. (Fed. Cir. 03/07/18) (non-precedential) (rev’g Summ. J. of indefiniteness of “ascertains an apparent signature”; term means “to discover the presence of a person’s signature in the signature field,” and one of skill in the art would understand with reasonable certainty that scope includes each of the four implementations in the Spec., ranging from determining if any mark in signature field to determining if signature a forgery); Hayward (Fed. Cir. 02/07/18) (non-precedential) (PTAB’s claim construction language “relative to the ultimate pumping application/function” not cause indefiniteness “simply because different applications/functions have different baseline energy usages”); Liqwd (Fed. Cir. 01/16/18) (non-precedential) (rejecting district court’s tentative ruling of indefiniteness for “hair coloring agent,” because, for example, skilled artisans know how to visually inspect to determine if a product changes hair color); Exmark (Fed. Cir. 01/12/18) (aff’g no indefiniteness: “elongated and substantially straight” not indefinite where claims and Spec. indicated feature must be long and straight enough to connect two other parts of the invention, along with other guidance about its function etc. that helped provide reasonable certainty); Presidio (Fed. Cir. 11/21/17) (aff’g no indefiniteness: “a claim is not indefinite if a person of skill in the art would know how to utilize a standard measurement method … to make the necessary measurement,” even when Spec. does not describe that method.); BASF (Fed. Cir. 11/20/17) (rev’g indefiniteness of “containing a material composition A effective for catalyzing NH3 oxidation;” nothing inherently wrong with functional language if provides reasonable certainty to skilled artisans about claim scope.); One-E-Way (Fed. Cir. 06/12/17) (2-1) (rev’g ITC indefiniteness decision; “virtually free from interference” not indefinite); Mentor Graphics (Fed. Cir. 03/16/17) (rev’g holding of indefiniteness: based on Spec.’s examples and explanation of function, “a skilled artisan would understand ‘near’ requires the HDL code and its corresponding circuit analysis to be displayed in a manner that physically associates the two,” in claim step “displaying said characteristics associated with those said final circuit’s nets and parts that correspond directly with said initial circuit’s nets and parts near said portions of said synthesis source text file that created said corresponding initial circuit parts and nets.”); Tinnus Enter. (Fed. Cir. 01/24/17) (aff’g preliminary injunction; claim reciting filling balloon until “substantially filled” with water; “plain error” review of indefiniteness because challenger did not object to Magistrate Judge’s recommendation of no indefiniteness; claims teach that balloons are “substantially filled” if they detach after shaking); Tinnus Enter. II (Fed. Cir. 05/30/18) (non-precedential) (rev’g PTAB indefiniteness decision; Spec. provides objective boundaries related to claim term (added by the Examiner) “substantially filled” with water: “to avoid infringement, one could select an elastic fastener that is either weak enough that the container would fall off without shaking or strong enough that a container would not fall off despite shaking.”); Eli Lilly (Fed. Cir. 01/12/17) (aff’g “vitamin B12” not indefinite: even though used in two ways in Spec.; trial court finding that term has clear meaning in claims’ context when prescribed in medical field, not clear error); Sonix Tech. (Fed. Cir. 01/05/17) (rev’g Summ. J. of indefiniteness of “visually negligible” [in “the image includes a graphical indicator that is visually negligible and is affixed on the surface of the object”]: although may be a term of degree, “visually negligible” involves what can be seen by the normal human eye which “provides an objective baseline through which to interpret the claims,” not purely subjective opinion. Spec. describes criteria to consider, gives two specific numerically defined examples, and describes preferred techniques for achieving desired result. No one in two reexaminations had difficulty with the term. The challenger’s invalidity contentions identified 28 terms as indefinite but not “visually negligible,” and it asked court to give term its “ordinary meaning.” “The examiner’s knowing allowance of claims based on the term …, plus the acceptance of the term by both parties’ experts, force us to the conclusion that the term ‘visually negligible’ is not indefinite.”); GE Lighting (Fed. Cir. 10/27/16) (non-precedential) (rev’g finding that “to heat sink” is indefinite; it means any transfer of heat); Cox Commc’ns. (Fed. Cir. 09/23/16) (rev’g Summ. J. of indefiniteness: Nautilus addresses certainty in scope of the claims, not individual claim terms, and here “the sole source of indefiniteness that Cox complains of, ‘processing system,’ plays no discernable role in defining the scope of the [method] claims”); Simpleair (Fed. Cir. 04/01/16) (first rev’g trial court’s construction of term and then, briefly, finding it definite); Akzo (Fed. Cir. 01/29/16) (aff’g determination at Markman of no indefiniteness, no “clear error” in fact finding based on expert declaration that PHOSITA would know to measure viscosity at room temperature; and Spec. made clear another alleged lack of clarity in the claim); Ethicon (Fed. Cir. 08/07/15) (rev’g Summ. J. of indefiniteness; claims, Spec. and unrefuted expert testimony clearly showed how PHOSITA would measure claim-recited pressures, and distinguishing Honeywell); Nautilus III (Fed. Cir. 04/27/15)) (on remand) (copying and pasting much of its original panel opinion rev’g Summ. J. of indefiniteness, and perhaps ridiculing the S. Ct.’s “reasonable certainty” standard: “The Court has accordingly modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’”); Apple (Fed. Cir. 05/18/15) (“‘substantially centered’” on the display” sufficiently precise in view of patent owner’s expert testimony and embodiment in Spec.); Eidos Display (Fed. Cir. 03/10/15) (rev’g Summ. J. of indefiniteness: Spec. makes clear that “a contact hole for source wiring and gate wiring connection terminals” means a separate hole for each terminal); Warsaw I (Fed. Cir. 03/02/15) (claim recited implant dimensions relative to size of vertebrae; not indefinite as parties stipulated average dimensions of vertebrae well known); Lexington (Fed. Cir. 02/09/15) (non-precedential) (rev’g R. 12(c) judgment of indefiniteness of open-ended Markush limitation (“said substrate is selected from the group comprising group III-V, group IV, …”): “intrinsic record is reasonably definite in indicating what the claim covers because the specification lays out a considerable list of exemplary substrates” and thus “the reasonably ascertainable meaning of the contested claim language is that the substrate must contain one or more of the enumerated members of the claimed group”); DDR Holdings (Fed. Cir. 12/05/14) (aff’g rejection of indefiniteness defense: “‘look and feel’ is not a facially subjective term” but rather “had an established meaning in the art by the relevant timeframe” as shown by challenger’s use of the term and admissions at trial). Cf. Ancora (Fed. Cir. 03/03/14) (aff’g rejection of indefiniteness defense; citing Nautilus pending; “the claim language and the prosecution history leave no reasonable uncertainty about the boundaries of the terms at issue, even considering certain aspects of the specification [referring to a hard disk as an example of “volatile memory”] that could engender confusion when read in isolation.”); accord Cioffi (Fed. Cir. 11/17/15) (non-precedential) (rev’g construction that “critical file” include “critical user file” which parties agreed would render term indefinite: “if there is a well-understood meaning for a term in the art, we do not allow a few inconsistent references in the specification to change this meaning. This is because, if the terms at issue have “so clear an ordinary meaning[,] a skilled artisan would not be looking for clarification in the specification.”)
b) ambiguous claims
- Genuinely Ambiguous Claims Prohibited: Nautilus (U.S. 06/02/2014) indirectly but plainly prohibits genuinely ambiguous claims (those with more than one reasonable scope after all interpretive tools have been applied without bias or hindsight): “the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement;” “eliminating that temptation [to inject ambiguity into clams] is in order.” Nautilus (U.S. 06/02/2014). Cf. Markman (Fed. Cir. 04/05/95) (en banc) (“This statutory language has as its purpose the avoidance of the kind of ambiguity that allows introduction of extrinsic evidence in the contract law analogy.”) Cf. Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (remand from S. Ct.) (facts found by trial court “do not resolve the ambiguity in the Group I claim about the intended molecular weight measure”); Media Rights (Fed. Cir. 09/04/15) (aff’g indefiniteness judgment on the pleadings (based on term triggering Sec. 112(6/f)): “Notably, a claim is indefinite if its language ‘might mean several different things and no informed and confident choice is available among the contending definitions.’”); Interval (Fed. Cir. 09/10/14) (claims are indefinite when “‘might mean several different things’” and “‘no informed and confident choice is available among the contending definitions’”) (quoting Nautilus (U.S. 06/02/2014) quoting a trial court decision.); In re Packard (Fed. Cir. 05/06/14) (“As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms;” but “this requirement is not a demand for unreasonable precision.”) Cf. King (U.S. 06/25/2015) (“The upshot of all this is that the phrase ‘an Exchange established by the State under [42 U. S. C. §18031]’ is properly viewed as ambiguous. The phrase may be limited in its reach to State Exchanges. But it is also possible that the phrase refers to all Exchanges—both State and Federal—at least for purposes of the tax credits.” Then rejecting one of the permissible interpretations as inconsistent with purpose of the statute.); CNH Indus. (U.S. 02/20/2018) (“a contract is not ambiguous unless, ‘after applying established rules of interpretation, [it] remains reasonably susceptible to at least two reasonable but conflicting meanings.’”) But see Core Wireless (Fed. Cir. 01/25/18) (2-1) (aff’g infringement verdict; no discussion of “indefiniteness”: “While this is a close case for which the intrinsic evidence could plausibly be read to support either party, we see no error in the district court’s construction of ‘unlaunched state’ to mean ‘not displayed.’”)
- Fed. Cir. Pre-Nautilus Endorsed Standard in USPTO Stricter Than “Amenable To Construction” Standard: In re Packard (Fed. Cir. 05/06/14) (“when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).”)
- USPTO Decisions And Position Re Claim Ambiguity: In re McAward (PTAB 08/25/17) (precedential) (in ex parte prosecution, “claims are required to be cast in clear as opposed to ambiguous, vague, indefinite-terms.” “the Office’s approach effectively results in a lower threshold for ambiguity than a court’s.” “The Board’s precedential decision in Miyazaki, which remains Board precedent, provides an example in which the Board affirmed an indefiniteness rejection of a claim containing words or phrases whose meanings were unclear, e., the approach approved in Packard. The instant decision reaffirms, after the Supreme Court’s decision in [Nautilus], the USPTO’s long-standing approach to indefiniteness and the reasons for this approach.”); In re Miyazaki (BPAI 11/19/08) (precedential) (“we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in” rejecting the claim as indefinite.); see Tinnus Enterprises (Fed. Cir. No. 17-1726 Doc. 39) (08/29/17) (USPTO brief arguing that Nautilus permits some ambiguity but In re Packard standard does not: “Thus, for example, a claim that is reasonably amenable to two different constructions would be rejected as indefinite during prosecution under the Packard approach even if a skilled artisan could be reasonably certain which of the constructions was intended. Ideally, the relevant public should be able to read a patent claim and know what they are excluded from without having to resolve any ambiguity.”); see Tinnus Enter. II (Fed. Cir. 05/30/18) (non-precedential) (declining to decide in this case whether Nautilus or In re Packard standard applies to PGR proceedings, in part because USPTO states that it is reviewing this issue).
- Analogies To Treatment Of Post-Interpretation Ambiguity In Statutes, Regulations And Contracts: Possibly analogize in part to (1) ambiguity under “step one” of Chevron (U.S. 06/25/1984) (“if the statute is silent or ambiguous with respect to the specific issue, the question for the court is whether the agency’s answer is based on a permissible construction of the statute.”), or (2) ambiguity of a contract sufficient to bring in extrinsic evidence, Personalized Media (Fed. Cir. 12/22/15) (non-precedential) (under Delaware law, “a contract is ambiguous if it is subject to two different reasonable interpretations.”), or (3) ambiguity of a federal regulation, Kisor (U.S. 06/26/2019) (first step of Auer / Seminole Rock deference analysis requires that the regulation be “genuinely ambiguous,” i.e., there is more than “one reasonable construction of a regulation” even after the court “exhaust[s] all the ‘traditional tools’ of construction,” because “hard interpretive conundrums, even relating to complex rules, can often be solved.”); Cf. King (U.S. 06/25/2015) (“the meaning of that [statutory] phrase [“established by the State”] may not be as clear as it appears when read out of context.”; even though “Petitioners’ arguments about the plain meaning of Section 36B are strong,” “Section 36B can fairly be read consistent with what we see as Congress’s plan, and that is the reading we adopt.”); Life Tech. (Promega) (U.S. 02/22/2017) (7-0) (resolving ambiguity in Sec. 271(f)(1) to determine how word “substantial” “is most reasonably read”: “The Patent Act itself does not define the term ‘substantial,’ and so we turn to its ordinary meaning. Here we find little help. All agree the term is ambiguous and, taken in isolation, might refer to an important portion or to a large portion.”).
c) unclear how to test for compliance
- Test For Compliance Unspecified In Patent: Where patent fails to specify which of available alternative tests to use for measuring compliance with a claim limitation, and different tests can have different results, the claims are indefinite. Honeywell (Fed. Cir. 08/26/03); HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness because no reasonable certainty as to the basic and novel property (incorporated into claim by virtue of the “consisting essentially of claim transition) of “better drying time” because Spec. disclosed two tests for evaluating drying time, “but those tests do not provide consistent results upon which a POSITA would be able to evaluate ‘better drying time.’” “To be clear, we do not hold today that so long as there is any ambiguity in the patent’s description of the basic and novel properties of its invention, no matter how marginal, the phrase “consisting essentially of” would be considered indefinite. Nor are we requiring that the patent owner draft claims to an untenable level of specificity.”); Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (remand from S. Ct.) (again rev’g trial court and again holding claims invalid for “indefiniteness” based on claim term “molecular weight of about 5 to 9 kilodaltons,” despite accepting trial court fact findings, where “molecular weight” can be measured in three different ways to get different results, Spec. does not define which measurement applies,); Dow Chem. II (Fed. Cir. 08/28/15) (claims previously held definite now held indefinite ivo Nautilus “altering the standard for indefiniteness,” so reversing award of $30.9 Million supplemental damages) (overturning in part Dow Chem. I (Fed. Cir. 01/24/12) (non-precedential) (“slope of strain hardening coefficient” not indefinite, even though was not a term of art and drawing promised by Spec. to help illustrate where to measure this slope, was missing from the patent app., aff’g $61.7 Million damages award)); Forest Labs. (Fed. Cir. 12/11/17) (non-precedential) (aff’g indefiniteness, claims require human-study comparisons of measured quantities (concentration profiles) for immediate release and extended release formulations, but “different techniques for such measurements are known in the art and some produce infringing results and others not, the intrinsic evidence does not adequately specify the technique or techniques to use, and extrinsic evidence does not show that a relevant skilled artisan would know what technique or techniques to us”); Amgen (Fed. Cir. 01/06/03) (where claim required a difference but “patent failed to identify a single standard by which the ‘difference’ could be measured,” and different standards would produce different results, claim is indefinite because “such ambiguity in claim scope is at the heart of the definiteness requirement.”). But see Wellman (Fed. Cir. 04/29/11) (distinguishing Honeywell and rev’g Summ. J. of indefiniteness); Presidio (Fed. Cir. 11/21/17) (aff’g no indefiniteness: “a claim is not indefinite if a person of skill in the art would know how to utilize a standard measurement method … to make the necessary measurement.”)
d) requiring forward-looking assessments of likely future results
- No Reasonable Certainty Where Infringement Turns On Future Results: Claim recited “wherein the batches have a maximum impurity level of Asp9-bivalirudin that does not exceed about 0.6%,” a level of impurity prior art compounds often but not consistently satisfied. Patent owner proposed construction: “the batches limitation is satisfied whenever an accused infringer consistently produces batches having Asp9 levels below 0.6 percent, and that the claims do not require the use of a particular process that achieves batch consistency.” Rejected as “unworkable,” because for ongoing commercial process, “this approach cannot provide ‘reasonable certainty’ regarding the scope of the asserted claims.” (citing Nautilus). “Proof of infringement would necessitate forward-looking assessments of whether an accused infringer’s production of future or ‘potential’ batches would be likely to generate Asp9 levels greater than ‘about 0.6%.’ To illustrate, if a defendant using the same compounding process produced fifty batches each having an Asp9 level below 0.6 percent, each of those fifty batches would infringe. But the defendant would not know whether any of the batches infringed until all fifty batches had been produced because if even one of those batches was determined to have an Asp9 level higher than 0.6 percent, none of the batches would infringe.” The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (rev’g trial court’s infringement ruling).
e) terms of degree
- Terms Of Degree Subject To An “Exacting ‘Objective Boundaries’” Standard: “Terms of degree are not ‘inherently indefinite’ in light of [Nautilus], [but] we have recognized that claims having terms of degree will fail for indefiniteness unless they ‘provide objective boundaries for those of skill in the art’ when read in light of the specification and the prosecution history,” citing “the exacting ‘objective boundaries’ standard from Interval.” Liberty Ammunition (Fed. Cir. 08/26/16) (claim term “reduced area of contact” would have been indefinite under trial court’s (erroneous) construction (“the area of contact between the interface and the rifling of the firearm is less than that of a traditional jacketed lead bullet of calibers .17 through .50 BMG”) because “a multitude of candidates for the conventional baseline projectile would remain for each caliber within that range”); Berkheimer (Fed. Cir. 02/08/18) (aff’g determination of “indefiniteness” of “mimimal redundancy”: “our case law is clear that the objective boundaries requirement applies to terms of degree.”); In re Walter (Fed. Cir. 08/21/17) (non-precedential) (“block-like” “is a term of degree without any accompanying guidance in the intrinsic record for determining its scope. The term ostensibly covers a range of shapes that are sufficiently ‘like’ a ‘block’ and excludes those that are not. But nothing in the intrinsic record offers ‘objective boundaries’ for ascertaining whether a given shape falls into either category.”); Guangdong (Fed. Cir. 08/27/19) (aff’g ITC finding that “lofty … batting” not indefinite; Spec. provides definition, functional characteristics, and examples; both intrinsic and extrinsic evidence can provide objective boundaries; challenger “seeks a level of numerical precision beyond that required when using a term of degree”); Exmark (Fed. Cir. 01/12/18) (aff’g no indefiniteness: “elongated and substantially straight” not indefinite where claims and Spec. indicated feature must be long and straight enough to connect two other parts of the invention, along with other guidance about its function etc. that helped provide reasonable certainty and objectively define the scope); One-E-Way (Fed. Cir. 06/12/17) (2-1) (rev’g ITC indefiniteness decision; despite no express definition in Spec. and no extrinsic evidence of ordinary meaning, “virtually free from interference” means “prevents one user from eavesdropping on another,” in view of Spec. emphasizing need for private listening free from interference and in view of prosecution history of parent patent, and is not indefinite in “a module adapted to reproduce said generated audio output, said audio having been wirelessly transmitted from said portable audio source virtually free from interference from device transmitted signals operating in the portable wireless digital audio system spectrum.” “For the purposes of definiteness, the term is not required to have a technical measure of the amount of interference.”); cf. One-E-Way (Fed. Cir. 06/12/17) (Prost, C.J., dissenting) (“The majority runs afoul of the Supreme Court’s warning against ‘viewing matters post hoc’ to ‘ascribe some meaning to a patent’s claims.’”); 3Form (Fed. Cir. 02/02/17) (non-precedential) (claim term not indefinite when construed as “[t]he appearance of an object in a relatively uncompressed or natural state, even if not perfectly natural or uncompressed”); Sonix Tech. (Fed. Cir. 01/05/17) (rev’g Summ. J. of indefiniteness of “visually negligible” [in “the image includes a graphical indicator that is visually negligible and is affixed on the surface of the object”]: although may be a term of degree, “visually negligible” involves what can be seen by the normal human eye which “provides an objective baseline through which to interpret the claims,” not purely subjective opinion.); GE Lighting (Fed. Cir. 10/27/16) (non-precedential) (aff’g term “elongated” (in “a thermally conductive elongated core having a first end in thermal communication with the conductive spreader”), construed to mean “extending in length,” indefinite; no “objective boundaries” for this term of degree; where applicant in prosecution distinguished some prior art as not “elongated,” and provides no dimensions in the Spec.; for claims with term of degree “to be definite, the patent must provide that additional information in the form of ‘objective boundaries.’”); Icon Health (Fed. Cir. 08/08/16) (non-precedential) (aff’g judgment of indefiniteness of three claim terms (“in-band,” “out-of-band,” and “relationship”) based in part on expert citing multiple prior art references showing that “those skilled in the art understand that the terms ‘in-band’ and ‘out-of-band’ are relative terms, and only have meaning in a given context with a defined reference”); Interval (Fed. Cir. 09/10/14) (aff’g indefiniteness of display “in an unobtrusive manner that does not distract a user” as “highly subjective” and with only a “hazy relationship” with the written description; claims must provide “objective boundaries”).
- Term Of Degree Sufficiently Definite Where Positive And Negative Examples Were Given: [pre-Nautilus] Word of degree “readily” in “said wax guard being readily installed and replaced by a user,” not indefinite where patent gave example of design that satisfied this claim requirement and an example that did not. Hearing Components (Fed. Cir. 04/01/10); Deere & Co. (Fed. Cir. 12/04/12) (neither “substantially planar” nor “easily wash off” renders claims indefinite, in view of clarifying language in Spec. and prosecution history); Accentra (Fed. Cir. 01/04/13) (non-precedential) (rev’g Summ. J. of invalidity; no clear and convincing evidence that “near” renders claim indefinite in claim to a stapler reciting “a pressing area near a front end of the handle.”); but see Interval (Fed. Cir. 09/10/14) (although words of degree may be sufficiently clear, as in Eibel Process, here refusing to “post hoc” adopt a single “e.g.,” example as the “exclusive definition of a facially subjective claim term”).
f) functional (and result) claims
- Functional Language Not Per Se Objectionable, But Purely Functional Language Or Point-Of-Novelty Functional Language Prohibited: Note: The word “functional” generally refers to recitations of what something does rather than what it is. But, the word “functional” alone is imprecise as sometimes facially functional language imparts definite structure by operation of law (e.g., Sec. 112(6/f)) or by its accepted meaning in the art (e.g., “screwdriver”). Therefore, “functional” language is not per se But, what is objectionable is any “functional” claim language that does not comply with Sec. 112(6/f) (see below) that is either purely functional (i.e., recites a “result” of overall device/method not a structure-imparting “function” of an element and not a “way” of achieving the result), or is functional at the purported point of novelty. In part, such language is objectionable because it fails to “particularly point out and distinctly claim” a method, machine, etc. This is an area where the Fed. Cir. (pre-Williamson) sometimes deviated from the S. Ct. but USPTO follows S. Ct.
- S. Ct.: “The vice of a functional claim exists not only when a claim is ‘wholly’ functional, if that is ever true, but also when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty. A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.” Gen. Elec. (U.S. 05/16/1938) (claim recited “that the grains must be ‘of such size and contour as to prevent substantial sagging and offsetting’ during a commercially useful life for the lamp.”); United Carbon (U.S. 12/07/1942) (rejecting claims describing product by its function/result, including one reciting “a pellet of approximately one-sixteenth of an inch in diameter and formed of a porous mass of substantially pure carbon black” (cited with approval in Markman (U.S. 04/23/1996)); Halliburton Oil (U.S. 11/18/1946) (element: “means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing section to clearly distinguish the echoes of said couplings from each other;” “The language of the claim . . . describes this most crucial element in the “new” combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid.”; “[U]nless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose.”); Holland Furniture (U.S. 05/14/1928) (claim to a starch glue described as being as effective as animal glue invalid; “a claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention. That the patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent is well understood.”) Cf. White (U.S. 11/15/1886) (“the object of an invention is a very different thing from the invention itself. The object may be accomplished in many ways; the invention shows one way.”); Alice Corp. (U.S. 06/19/2014) (claim elements “data processing system,” “communications controller,” and “data storage unit,” are “purely functional and generic”).
- USPTO: A claim may not contain a “purely functional claim element” with no limitation of structure, whether or not at the point of novelty, unless it triggers Sec. 112, ¶ 6. In re Miyazaki (BPAI 11/19/08) (precedential) (“the claimed ‘sheet feeding area operable to feed …’ is a purely functional recitation with no limitation of structure” and thus unpatentable for lack of definiteness and lack of enablement); cf. In re Catlin (BPAI 02/03/09) (precedential) (if step “providing, at a merchant’s web site, means for a consumer to participate in an earning activity to earn value from a merchant” did not invoke Sec. 112(6/f), then “the step simply recites purely functional language and would impermissibly cover every conceivable act for achieving the claimed result, and the scope of the claimed step would not be enabled.”)
- Fed. Cir. Questioning “Functional” Claim Language: Congress “struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed, namely, by restricting the scope of coverage to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.” Williamson (Fed. Cir. 06/16/15) (en banc portion); Williamson (Fed. Cir. 06/16/15) (Reyna, J. concurrence) (Halliburton Oil’s arguable rejection of functional claiming generally “merits attention.”); Amdocs II (Openet) (Fed. Cir. 11/01/16) (2-1) (discussing Sec. 101: “the Supreme Court [in Halliburton Oil] outlawed such broad ‘ends’ or function claiming as inconsistent with the purposes of the Patent Statute. Congress, however, a few years later softened the rule.”); Ergo Licensing (Fed. Cir. 03/26/12) (explaining Sec. 112(6/f): “Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming.”; “Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.”); Lufthansa (Fed. Cir. 10/19/17) (non-precedential) (rev’g trial court holding that “control means” element was definite: “’Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming.’”); Greenberg (Fed. Cir. 08/08/96) (“Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof.”) Patent owner proposing construction of claim term at point of novelty (here, “fragile gel”) as covering, in effect, any and all means so long as they perform the recited functions, increases chance of indefiniteness ruling. Halliburton Energy (Fed. Cir. 01/25/08) (method of using a ‘fragile gel’ drilling fluid). See Forest Labs. (Fed. Cir. 12/11/17) (non-precedential) (Lourie, J., concurring op.) (“Claiming a result without reciting what materials produce that result is the epitome of an indefinite claim. Such a claim fails to delineate with any reasonable certainty the requirements of the formulation. The claim is thus indefinite irrespective of the twisting narrative that is recited concerning how the result is measured. It is a hollow claim…. [It] is indefinite for the principal and simple reason that it claims a result without reciting how to achieve that result.”)
- Fed. Cir. Approving “Functional” Claim Language: “The Nautilus standard of ‘reasonable certainty’ does not exclude claim language that identifies a product by what it does. Nothing inherent in the standard of ‘reasonable certainty’ precludes a relevant skilled artisan from understanding with reasonable certainty what compositions perform a particular function. Not surprisingly, we have long held that nothing in the law precludes, for indefiniteness, ‘defining a particular claim term by its function.’” BASF (Fed. Cir. 11/20/17) (rev’g indefiniteness holding; “containing a material composition A effective for catalyzing NH3 oxidation,” provides “reasonable certainty” because “the claims and specification let the public know that any known SCR and AMOx catalysts can be used as long as they play their claimed role in the claimed architecture.”); Visual Memory (Fed. Cir. 08/15/17) (2-1) (Stoll, J.) (rev’g R. 12(b)(6) dismissal under Sec. 101; rejecting dissent’s position that claims directed to a result without specifying how achieved: “both the specification and the claims expressly state that this improved memory system is achieved by configuring a programmable operational characteristic of a cache memory based on the type of processor connected to the memory system.”); see The Medicines Co. III (Mylan) (Fed. Cir. 04/06/17) (Dyk, J.) (restricting results claim language to a particular disclosed process to achieve the result: “Although functional limitations in patent claims are not per se objectionable even when the means-plus-function format is not invoked, they cannot be ‘so broad that [they] cause the claim to have a potential scope of protection beyond that which is justified by the specification disclosure.’”); Cox Commc’ns. (Fed. Cir. 09/23/16) (rev’g Summ. J. of indefiniteness based on term “processing system” in method claims: “claims are not per se indefinite merely because they contain functional language;” “here, functional language promotes definiteness because it helps bound the scope of the claims by specifying the operations that the “processing system” must undertake. All of the asserted claims are method claims, so it makes sense to define the inventive method as a series of functions.”); Nautilus (Fed. Cir. 04/26/13) (distinguishing Halliburton Oil: “the claimed apparatus has inherent parameters where the ‘spaced relationship’ cannot be larger than the width of a user’s hand. Additionally, it has been shown that skilled artisans can readily ascertain the bounds of the ‘spaced relationship’ through tests using standard equipment.”), vacated on other grounds (U.S. 06/02/2014), on remand, Nautilus III (Fed. Cir. 04/27/15) (on remand) (a claim term may be defined in purely functional terms); Star Sci. (Fed. Cir. 08/26/11) (claim not indefinite; construed as “controlling one or more of humidity, temperature and airflow in the curing barn, in a manner different from conventional curing, in order to substantially prevent the formation of TSNAs.”).
- Failure To Define Clear Distinction Over Prior Art: “Whether the patent expressly or at least clearly differentiates itself from specific prior art … is an important consideration in the definiteness inquiry.” Halliburton Energy (Fed. Cir. 01/25/08); Gen. Elec. (U.S. 05/16/1938) (a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty.”)
- That Alleged Uncertainty Is Removed From Point Of Novelty Has Been Cited As Factor Against “Indefiniteness”: BASF (Fed. Cir. 11/20/17) (rev’g indefiniteness holding; “containing a material composition A effective for catalyzing NH3 oxidation,” provides “reasonable certainty” in part because the purported advance over the prior art was not the particular catalysts used.) [See Patently O commentary on BASF.]
- Conceding That Term Does Not Trigger Sec. 112(6/f) May Concede Not Purely Functional: Cox Commc’ns. (Fed. Cir. 09/23/16) (rev’g Summ. J. of indefiniteness based on term “processing system” in method claims: by admitting that “processing system” does not trigger Sec. 112(6/f), challenger admitted not “pure functional claiming”). [Consider Seeking S. Ct. Review.]
g) coined terms
- Coined Terms Require A Precise Definition: JT Eaton (Fed. Cir. 02/07/97) (applicant duty to define coined terms with precision (“a term unknown to those of ordinary skill in the art at the time the patent application was filed. It thus fell to the applicants, as a duty, to provide a precise definition”); but not finding it indefinite or discussing indefiniteness but instead construing claim in view of prosecution history); but see 3M Innovative (Fed. Cir. 08/06/13) (claim’s phrase not known to PHOSITA: “Given that one of skill in the art is informed by the claim disclosures, it is unnecessary to limit the plain language based on unclear statements in the specification and prosecution history.”)
h) hybrid claims
- Hybrid Claim Directed To Thing And Method Of Using Thing, Is Indefinite: Claim is indefinite if it claims both a system and a method of using the system. IPXL Holdings (Fed. Cir. 11/21/05) (“wherein … the user uses”); accord H-W Tech. (Fed. Cir. 07/11/14) (aff’g Summ. J. of indefiniteness of CRM claim reciting method steps “where said user …”); In re Katz (Fed. Cir. 02/18/11) (invalidating system claim reciting “interface means for providing automated voice messages…to certain of said individual callers, wherein said individual callers digitally enter data”); Rembrandt Data (Fed. Cir. 04/18/11) (aff’g invalidity for indefiniteness of apparatus claim that recited several means elements and ended with step “transmitting the trellis encoded frames,” refusing to redraft the elements into a means element); Nassau Precision (Fed. Cir. 06/06/14) (non-precedential) (dictum citing IPXL with approval);
- But Using Functional Language Tied To Structure To Limit Scope Of Non-Method Claim May Not Make Claim Indefinite: Microsoft (Mastermine) (Fed. Cir. 10/30/17) (rev’g indefiniteness decision based on IPXL; claim element (“wherein the reporting module installed within the CRM software application presents a set of user-selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields”) recites a function “specifically tied to structure”) [see Patently O commentary on Mastermine]; LifeNet (Fed. Cir. 09/16/16) (following “negative” “functional” language defines a property of an element, not a method step: “said one or more plasticizers are not removed from said internal matrix … prior to transplantation”); UltimatePointer (Fed. Cir. 03/01/16) (rev’g indefiniteness judgment; limitation clearly recites capability of the structure not activity of a user: “device including: an image sensor, said image sensor generating data”); Microprocessor Enhancement (Fed. Cir. 04/01/08) (following language is functional, not a method step invalidating the claim: “a pipeline processor for executing instructions comprising…fetching means for fetching source operands specified by said operand specifiers; operating means for performing the operation specified by said opcode….”); HTC IPCom I (Fed. Cir. 01/30/12) (rev’g hybrid-claim indefiniteness judgment; alleged method steps merely recited environment for the claimed device; claims used “preamble-within-a-preamble” format); Nautilus (Fed. Cir. 04/26/13) (claim not a hybrid), vacated on other grounds (U.S. 06/02/2014).
i) “consisting essentially of” claims
- The “Basic And Novel Properties Of The Invention” Must Be Reasonably Certain: “Two questions arise when claims use the phrase ‘consisting essentially of.’ One question focuses on definiteness: what are the basic and novel properties of the invention? The other question focuses on infringement: does a particular unlisted ingredient materially affect those basic and novel properties? …. To determine if an unlisted ingredient materially alters the basic and novel properties of an invention, the Nautilus definiteness standard requires that the basic and novel properties be known and definite.” HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness because no reasonable certainty as to the basic and novel property of “better drying time” because Spec. disclosed two tests for evaluating drying time, “but those tests do not provide consistent results upon which a POSITA would be able to evaluate ‘better drying time.’”)
j) correction of errors in claim
- Trial Court May Correct Some Errors In A Claim: A trial court can correct a patent claim “only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Indus. (Fed. Cir. 12/05/03) (claim invalid for indefiniteness because court could not correct “a” to mean “and” because there are multiple plausible possible corrections); Trusted Knight (Fed. Cir. 03/07/17) (non-precedential) (aff’g indefiniteness because specific correction of typographical error in claim [missing verb between “hook” and “inserted” in ‘a process of passing the encrypted data to a 3-ring level where a hook inserted by a hook-based key logger,’] is “subject to reasonable debate.”); I.T.S. Rubber (U.S. 11/22/1926) (upholding trial court interpreting claim as if word “rear” were present based on evident intent of both applicant and the Examiner: “the omission of the word ‘rear’ was through a clerical error due to oversight, and [both] counsel for the applicant and the examiner understood that it was contained in claim 8 as well as the others; and we are of opinion that the claim should be construed and have the same effect as if it had been included. This is not in any real sense, a re-making of the claim; but is merely giving to it the meaning which was intended by the applicant and understood by the examiner.”). Error must be evident on face of the patent without looking at the prosecution history. H-W Tech. (Fed. Cir. 07/11/14) (aff’g Summ. J. of refusal to correct error, refusal to permit suit on uncorrected claim, and that certificate of correction did not apply retroactively). Error may be corrected even if multiple corrections are reasonable, if claim would have same scope and meaning to person of skill in the art under each of those corrections. CBT Flint (Fed. Cir. 08/10/11); Cf. 35 U.S.C. § 254 (Director correction of PTO mistake, applicable to causes of action thereafter arising), 255 (Director correction of minor applicant mistakes, application to causes of action thereafter arising); Southwest Software (Fed. Cir. 09/18/00) (Sec. 254 and 255 certificates of correction apply only to future causes of action); E.I. du Pont (Fed. Cir. 05/14/08) (at least where complaint filed after certificate of correction granted, patent owner may sue for infringement after issuance of certificate of correction even if infringement began before certificate of correction).
k) who decides what when?
- May Be Decided As Part Of Claim Construction: “A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.” Datamize (Fed. Cir. 08/05/05); HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (aff’g Markman ruling of indefiniteness of three terms, finding certain subsidiary fact findings based on extrinsic evidence not clear error. “Courts evaluating claims that use the phrase ‘consisting essentially of’ may ascertain the basic and novel properties of the invention at the claim construction stage, and then consider if the intrinsic evidence establishes what constitutes a material alteration of those properties.”); Ernie Ball (Fed. Cir. 01/24/13) (non-precedential) (invalidating claims for indefiniteness, even though not specifically argued below, as part of duty to construe claims); EPlus (Fed. Cir. 11/21/12) (“indefiniteness is a question of law and in effect part of claim construction.”); Noah Sys. (Fed. Cir. 04/09/12) (“Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 is a matter of claim construction, which we review de novo.”)
- Fed. Cir. Has Permitted Decision By Jury; S. Ct. Likely Would Not:
- Fed. Cir.: “Definiteness … is amenable to resolution by the jury where the issues are factual in nature.” BJ Services (Fed. Cir. 08/06/03) (aff’g jury verdict of no indefiniteness); Bombardier (Fed. Cir. 09/20/19) (non-precedential) (aff’g jury verdict of indefiniteness and sending issue to the jury, without mentioning Teva, where parties did not contest the claim construction and indefiniteness based on terms in that construction: “the primary disputes are: (1) whether [skilled artisan] would have understood how to design a ‘seat position’ for a standard rider despite the errors in the dimensions provided in the Spec.; and (2) whether a person of ordinary skill in the art would have known how to place a dummy or rider in a ‘natural operating position’ on a snowmobile. The evidence presented on these topics was almost exclusively extrinsic, in large part encompassing warring expert testimony. The question of definiteness thus required the resolution of critical factual issues and was properly before the jury.”)
- S. Ct.: The Supreme Court, post-Nautilus, treated a question of claim indefiniteness as a question of claim construction, exclusively for the Court not the jury, albeit in the context of determining the proper appellate review standard for underlying fact findings by the trial court. Teva Pharm. II (U.S. 01/20/2015) (vacating Fed. Cir. reversal of trial court judgment of no indefiniteness.), on remand, Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (“reasonable certainty” indefiniteness presents a question of law). Cf. Merck (U.S. 05/20/2019) (whether FDA disapproval of a warning of a different drug risk was clearly contrary to manufacturer seeking a warning for this drug risk, such as to preempt any state law cause of action for failure to so warn, is a question for a court not a jury, in part because “The question often involves the use of legal skills to determine whether agency disapproval fits facts that are not in dispute. Moreover, judges, rather than lay juries, are better equipped to evaluate the nature and scope of an agency’s determination. Judges are experienced in ‘[t]he construction of written instruments,’ such as those normally produced by a federal agency to memorialize its considered judgments. [Markman]. And judges are better suited than are juries to understand and to interpret agency decisions in light of the governing statutory and regulatory context. To understand the question as a legal question for judges makes sense given the fact that judges are normally familiar with principles of administrative law. Doing so should produce greater uniformity among courts; and greater uniformity is normally a virtue when a question requires a determination concerning the scope and effect of federal agency action.” “Any ‘subsidiary factual disputes’  are part and parcel of the broader legal question.”).
- Impact Of Teva And FRCP 52 On Appellate Review Of “Indefiniteness” Summary Judgment Rulings: Fed. Cir. has stated that trial courts find facts when deciding “indefiniteness” summary judgment motions and therefore Teva Pharm. II (U.S. 01/20/2015) applies and “we review these subsidiary factual determinations for clear error.” Eon (Fed. Cir. 05/06/15) (aff’g Summ. J. of Sec. 112(6/f)-based “indefiniteness;” trial court had Markman hearing; Summ. J. hearing, and took expert testimony); Nautilus III (Fed. Cir. 04/27/15) (but relying on only purportedly intrinsic evidence); Eidos Display (Fed. Cir. 03/10/15) (same); United Access (Fed. Cir. 01/24/19) (non-precedential) (trial court decision aligned with expert testimony so may be characterized as fact finding based on extrinsic evidence, but would reverse indefiniteness under de novo review as well); cf. Cox Commc’ns. (Fed. Cir. 09/23/16) (rev’g Summ. J. of indefiniteness; challenger must prove any facts by clear and convincing evidence); Media Rights (Fed. Cir. 09/04/15) (aff’g indefiniteness judgment on the pleadings: “Because the indefiniteness issue in this case is intertwined with claim construction, we review any factual determinations for clear error.”); cf. Berkheimer (Fed. Cir. 02/08/18) (aff’g “subsidiary factual finding” at Markman based on expert declaration where intrinsic evidence did not provide objective boundary for term of degree, “minimal redundancy”); Icon Health (Fed. Cir. 08/08/16) (non-precedential) (aff’g indefiniteness determination on Markman proceeding; applying clear error review to trial court fact finding based on extrinsic evidence of prior art uses of challenged claim language); Akzo (Fed. Cir. 01/29/16) (aff’g determination at Markman of no indefiniteness, on “clear error” review of fact finding based in part on extrinsic evidence; “indefiniteness is a question of law that we review de novo, subject to a determination of underlying facts.”) (citation omitted). [Consider Seeking S. Ct. Review.]
- Internal Coherence Of Patent, Contextual Meaning Of Claim Language, Subjectivity Of Claim Language, All Reviewed De Novo: Even if expert opines on it, “‘the internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law’” as are “conclusions of subjectivity and lack of an objective standard.” Sonix Tech. (Fed. Cir. 01/05/17) (rev’g Summ. J. of indefiniteness; to trigger “clear error” review requires actual fact finding); Teva Pharm. III (Fed. Cir. 06/18/15) (2-1) (holding claims indefinite on remand from S. Ct.; “To the extent that Teva argues that the meaning of ‘molecular weight’ in the context of patents-in-suit is itself a question of fact, it is wrong. A party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it. The internal coherence and context assessment of the patent, and whether it conveys claim meaning with reasonable certainty, are questions of law. The meaning one of skill in the art would attribute to the term molecular weight in light of its use in the claims, the disclosure in the specification, and the discussion of this term in the prosecution history is a question of law.”).
H-W Tech. Hybrid Claim:
“A tangible computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:
receiving a command to perform a contextual search;
wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call;
wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and ….”